Federal Circuit: Unquantified Infringement == No Infringement

Life Techs. Corp. v. Promega Corp. (Fed. Cir. 2017)

Normally, patent infringement liability stems from an infringer using all-elements of a claimed invention.  However, a quirky provision found in 35 U.S.C. 271(f)(1) creates liability for exporting some components of a patented invention.  Particularly, the statute requires export/supply of “a substantial portion of the components.”  In its 2017 Life Tech decision, the Supreme Court interpreted this provision — holding that: export of a single component of a multicomponent invention could not meet the “substantial portion” threshold requirement. Namely, one component cannot be a “substantial portion of the components.”

On remand, the Federal Circuit has issued a new opinion in the case — this time affirming the district court judgment that patentee (Promega) failed to prove infringement under 271(f)(1) as required by the Supreme Court decision.

One problem with this analysis though – according to Promega is that – for some of the infringing kits, “it was undisputed at trial that LifeTech supplied more than one component. . . Taq polymerase and primer pairs.”   In a footnote the Federal Circuit dismissed this argument – finding that Promega had not proven particular damages regarding these 2-component exports and thus had no right to collect any damages for the infringement.

US Sales: The decision similarly affirmed of the district court’s JNOV that “that Promega failed to prove its infringement case under 35 U.S.C. § 271(a).”  A major problem with this conclusion is – as the court explains: “that the record contains evidence of admitted infringement by Life under § 271(a).” In its original decision in the case, the Federal Circuit wrote explained:

At trial, LifeTech admitted that some of the sales of its accused genetic testing kits in the United States were “technically an infringement” of Promega’s patents.LifeTech also admitted that Promega was “entitled to be compensated for [LifeTech’s] infringement.” Promega presented evidence to the jury showing sales of LifeTech’s accused kits in the United States. Based on LifeTech’s own admissions, which are supported by evidence in the record, we conclude that LifeTech’s kits made, used, or sold in the United States infringe the Tautz patent under 35 U.S.C. § 271(a).

On remand here, the Federal Circuit has taken a different position — by noting that the exact quantity of US infringement is unknown: “some unquantified number of Life’s kits infringed under § 271(a).”

At trial, Promega had presented world-wide sales numbers – that included both infringing USA kits and the UK kits (component-export elements) in a way that both the district court and now the appellate panel argue waived its right to obtain particularized damages under 271(a) – and as such “any reinstatement of our prior decision on § 271(a) infringement would be moot.”

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